Summary

The process of filing a trademark application normally takes about 3 months from the time all documentation is received to publication. Publication takes longer because the Registrar of Trade Marks Department has a backlog to clear.  This delay in publication however should not affect your client's ability to conduct business once we are notified that the trade mark has been accepted for registration.  The entire process would therefore take about twenty-four (24) months to complete.

The results for searches normally take about ten (10) to fifteen (15) working days

CLASSIFICATION SYSTEM

          International classification system, no servicemarks.

a.       Multiple Class Applications:

Not available; separate application required for each class

b.       Breadth of Specification

34 Classes, covering industrial, commercial, household goods, etc.

In Ghana, this is done by indicating the class headings and the goods and services in the class.  E.g. Class No. 12, Vehicles; apparatus for locomotion by land, air or water.  Ref. First Schedule to the Trade Marks Regulations (L.I. 667).

EXAMINATION AND OPPOSITION

a.       Examination: Automatic, no formal request required, examination is conducted for formalities and to ascertain distinctiveness and conflict with prior applications and registrations.  In Ghana, it is difficult to obtain registration of descriptive or laudatory words, surnames, geographical place names, four letters which do not form a word, or numerals.

b.       Opposition Term:

Within sixty days of the publication of the application.

c.       Extension to Oppose:

The Registrar may grant such extensions of time as he may think proper upon application being made to him. (Section 20 of the Trade Marks Regulations which deals with extension of time in opposition proceedings, provides for such reasonable extensions of time at the Registrar's discretion).

i.        Neither The Ghana Trade Marks Act, 1965 (Act 270) nor the Regulations provided for extension of time based on the consent of parties.  The power to extend time is at the discretion of the Registrar.  But any agreement between the parties regarding such extension of time may influence the Registrar in the exercise of his discretion.

ii.       There is no prescribed form for making an application to the Registrar or court for an extension of time.  However, the application must be in writing.  Upon receipt of such application, the Registrar or Court may grant or refuse an extension either with or without a hearing.  Where the Registrar or the Court decides to grant a hearing, notice of the hearing would be given to both parties.

iii.       The general criterion is whether reasonable circumstances exist to warrant the granting of extensions, either with or without a hearing.

TERMS OF REGISTRATION AND RENEWAL

a.       First term of registration:

          Seven years from the filing date of the application.

b.       Subsequent terms:

          Every fourteen years thereafter

c.       Late renewal:

Within two months of the advertisement of non-payment of the renewal fees

          d.       Cancellation for non-use:

i.          Under Section 26 (1) of said Ghanaian Trade Marks Act, non-use within a period of 5 years makes a registration vulnerable to cancellation upon proof (a) that there was never any bona fide use.  The registration is, however, not automatically void for non-use.

ii.          It is necessary to apply to the Registrar or the Court for the Registration to be removed from the Register due to non-use.  Upon an application being made, however, a Registered Proprietor may defend non-use to the satisfaction of the Registrar or Court and thereby halt any cancellation.

e.       Restoration:

At the discretion of the Registrar

f.        Proof of Use on Renewal:

None required.  But may be required for restoration in cases of non-payment of renewal fees.

g.       Reclassification on Renewal:

None required.

ASSIGNMENTS

a.       Signatures Required

b.       Consideration:

Not regulated

c.       Language:

No particular language prescribed.  But where language other than English is used, Registrar may require exact translation.

d.       Goodwill:

Any assignment of a mark otherwise than in connection with the goodwill of the business shall be stated to the Registrar.

e.       Pending Applications:

May be assigned.  But no specific provisions in the Act on this issue.

f.        Other Documents:

Statement of case.

g.       Assignment Notes:

A copy of any instrument proposed for the assignment or effecting the transmission.

8.       MAINTENANCE OF REGISTRATIONS

a.       Cancellation for Non-use:

If no use of the mark for any period of five consecutive years after registration.

b.       Marking Requirements:

"Registered Trade Mark" optional.

9.       INTERNATIONAL CONVENTIONS

          Member of:

          World Intellectual Property Organization (W.I.P.O.)

          African Intellectual Property Organization (AI.P.O.)

          Paris Union

10.     OTHER PROVISIONS

          Other provisions of the Law:

The Law also provides for International arrangements whereby the Ghana Act may be applied in said treaty arrangements with other countries for the mutual protection of trade Marks in Ghana or where the law of any country makes provision for the protection of Trade Marks registered in Ghana.

Requirements

Community Trademarks

1. Name and address of applicant
2. One specimen of the Trademark
3. List of goods or services
4. Declaration of priority including date, country and application number
5. certified copy of the priority application (may be filed subsequently)
6. Declaration of seniority including date of application, country, registration number and list of goods or services if applicable
7. Seniority documents (non-certified registration documents together with a confirmation of the status hereof) if applicable
8. Power of Attorney (may be filed subsequently)

The minimum documentation for a trademark application is

          (a)      The full name/address/description of the Applicant;

(b)      The mark (word mark or label) and a list of goods/classes for which the trademark should be protected;    

(c)      Ten (10) prints of the mark (for marks in a special form or device marks).  The prints must not exceed 10cm x 10cm.  If the mark is registered in more than one class, then two additional representations of the mark for each class must be supplied;

(d)      It is possible to register a series of trademarks and four representations of each mark must be included in the application;

(e)      A Power of Attorney simply executed by the applicant company.

RELEVANT INFORMATION: To enable us to properly complete the application from for registration of the Trade Mark, we must have:-

(a)      Full name, street address and national of applicant(s).

(b)      Whether applicant(s) is/are manufacturer(s) and/or merchant(s).

(c)      The goods or services for which the Mark is to be registered.  The class or classes according to international classification must also be stated.

(d)      It is also useful to state whether the Mark is being used in Ghana by the proprietor(s), proposed to be used in Ghana by a body corporate to be constituted or proposed to be used in Ghana by a registered user (in which case an application for registration of registered user must be filed simultaneously).

DOCUMENTS REQUIRED FOR FILING THE APPLICATION

          Filing Documents:

a.       Authorisation of an Agent is an essential and formal requirement.

b.       Company Seal

This is not mandatory.

Under the Ghana Companies Code, 1963 (Act 179), any document of a body corporate requiring authentication need not bear the common seal of the company.  Further, Section 69 (1) of The Ghana Trade Marks Regulations (L.I. 667) provides that any document, including such documents as above stated may be signed for and on behalf of the body corporate by a director, secretary or principal officer or any other person who satisfies the Registrar that he is authorised to sign the document.

          DOCUMENTS REQUIRED FOR RENEWING A REGISTRATION

a.       Renewal Documents:

Authorisation of Agent